Why Policing the Internet for Infringement is Important

WHY SHOULD YOU POLICE THE INTERNET FOR INFRINGEMENT OF YOUR IP?

Prevent others' benefiting at the IP owner's expense
All intellectual property owners, whether an owner of copyrights, trademark, or patents, have exclusive rights which give them a great deal of control over the dissemination, use, reproduction and adaptation of their work. When intellectual property owners fail to police the internet for infringement of their works, they fail to diligently ensure that others are not using their works without consent and run the risk of creating a false impression of affiliation with the unauthorized user. This might not only reflect negatively on the intellectual property owner but is also likely to allow the infringer to benefit, financially or otherwise by violating the exclusive rights of the IP owner. All IP owners, therefore, should police the internet to find potential infringers for at least the reason of preventing others to benefit at the IP owner's expense.

Reduce risk of a court finding abandonment or forfeiture
All intellectual property owners also have an interest in policing the internet for infringement because such policing may reduce the risk that a court would find the IP owner to have abandoned or forfeited his rights. If an IP owner, for example, fully knows that his rights are being infringed online (perhaps by a credible rumor) but fails to take action against the online infringers (either due to a lack of ability to find any specific instances of infringement or a naive belief that rights cannot be infringed online), a court may find that the IP owner abandoned or forfeited his rights to the public. Any infringer's claim that he or she has not infringed an IP owner's rights is strengthen by an IP owner's failure to police the internet for potential infringement. If and when an IP owner obtains knowledge that there is potential infringement online, he or she should take action to resolve the issue as soon as possible. Otherwise, the infringer has a greater chance of escaping liability through claiming abandonment or acquiescence as a defense.

The greater risk due to not policing the internet does not mean that an IP owner must scour the internet for every possible potentially infringing activity. Rather, IP owners should establish a systematic program for monitoring the internet, including the documentation of those potentially infringing activities that are looked into. Such a policing program may be the essential evidence necessary to convince a court that any delay in finding the infringement at issue was not due to the IP owner's abandonment or forfeiture of his or her rights.

Trademark-specific reasons
Trademark owners, specifically, have additional reasons and obligations to police the internet for infringing uses, particularly because infringing uses of a trademark online may confuse and deceive users so as to cause them financial injury.

Affirmative Duty to police the internet
Courts have held that a trademark owner has an affirmative duty to police their marks on the Internet. In Hard Rock Café Int'l (USA) Inc. v. Morton, the trademark owner had knowledge of many sites that made use of the Hard Rock mark and the owner even expressed that the sites did not reflect positively on his mark. 1999 U.S. Dist. LEXIS 13760, No. 97 Civ. 9483, 1999 WL 717995 (S.D.N.Y. Sept. 9, 1999). The court in Hard Rock Café noted that the trademark owner's method of regulating his or her trademark was not sufficient and did not reflect a devotion on his or her part to prevent infringement. In essence, the court found that the trademark owner had a responsibility to police his or her trademarks online, and the failure to meet that duty resulted in loss of the ability to hold others liable for infringement.

Protects the strength of a trademark
Federal trademark law dictates that when trademark owners do not police their marks on the internet, they are taking the risk that their marks will become indistinctive. A trademark owner, by neglecting to regulate use of his or her mark, portrays to competitors that he or she is not sufficiently concerned about the value of the mark, thereby opening the door for potential infringers to take advantage of the mark into which the trademark owner likely invested time and resources. A potential infringer may lack knowledge of the trademark owner's ownership, and therefore, make use of the mark with no bad faith intention of capitalizing on the good will of the trademark owner. Negligence or failure to act may ultimately result in the marks' gradual shift to the public domain, where anyone is free to make use of it. The indistinctiveness of a mark leads to the weakening of a mark's effectiveness to identify the source of a product or service, and thus, weakens any claim of infringement the trademark owner may have.

One of the most important goals of Trademark law is to prevent confusion among consumers in the marketplace as to the source of goods or services. As discussed, failure to police a mark may open the doors for the mark to be blurred and less powerful so that consumers have more difficultly identifying the goods or services on which they have come to rely on for quality. This will likely lead to consumer dissatisfaction, an undesirable characteristic of the marketplace. Such consumer dissatisfaction is detrimental to the trademark owner when the consumers' confusion causes them to buy a competitor's product believing that they are buying the trademark owner's product. Further, if consumers find that they prefer the competitor's goods or services after having mistakenly purchased them, the trademark owner will have permanently lost the business of these consumers.

Provides proof that a mark is not generic
Demonstrating diligent online policing efforts is helpful in aiding a trademark owner meet the burden of proof that a mark has not become generic. The court in Dupont v. Yoshida held if the trademark owner presents evidence of sufficient policing activity to prevent unauthorized use of the mark by others, any skepticism should be resolved in the trademark owner's favor of the trademark holder. E. I. Du Pont de Nemours & Co. v. Yoshida International, Inc., 393 F. Supp. 502 (D.N.Y. 1975).

The information presented in trusted treatises and trade publications by trademark experts is in agreement with the principles established in the Hard Rock case that the trademark holders' responsibility to maintain control over their marks is also applicable to misuse of trademarks on the Internet. However, there is not a duty to take action against every incidence of abuse. A company or organization need only implement adequate policing methods and procedures to follow if and when online infringements are found.

Protects reputation and investment
Trademark owners that do not police their marks on the internet run the risk of subjecting visitors to undesirable and harmful content on the Internet, thereby damaging the company's reputation and good name. This might be particularly true if and when a junior user of a mark uses it in connection with material on the Internet that might offend the viewer targeted by the trademark owner. Therefore, it is crucial for a trademark owner to police his or her mark on the internet to not only prevent consumer confusion, but also to prevent exposing their intended audience to undesirable material that reflects poorly on the trademark owner.

In Coca-Cola Co. v. Purdy, William Purdy was an anti-abortion activist who registered domain names such as mypepsi.com and washingtonpostsays.com in order to attract visitors to his sites. Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004). His sites displayed gruesome and offensive images of aborted fetuses. He also imitated the aesthetic elements on his websites of the actual websites, such as the banners used by The Washington Post. The U.S. Court of Appeals for the Eighth Circuit found that the Anticybersquatting Consumer Protection Act protects trademark owners from being victimized by those who register a domain name in bad-faith with the intention to benefit from tarnishing and diluting the trademark owner's trademark and by capitalizing on the trademark owner's positive reputation in order to further their purposes.

Protects Consumers against fraud
Financial institutions have a unique vulnerability to attacks which intensifies their need to police the Internet for potential infringers of their trademarks and others who attempt to portray an affiliation with the institution that does not exist. Specifically, there is a growing threat to consumers' confidential information by way of a technique called e-mail "phishing." E-mail phishing is the process by which consumers receive e-mails purported to have been sent by their financial institution and asks them to update their information on file with the institution. If consumers follow the instructions and uses the links contained in the website, they are directed to a phony website created by the phishers that requests confidential information from the visitor. Obtaining this information allows the phishers to access consumers' accounts and take the consumers' funds. Research done by the Garner Research firm found that emails from phishers have reached at least 57 million American adults.

Other businesses suffer from e-mail phishing, including online auction and software companies. Policing the internet for unauthorized use of their trademarks is essential for all trademark owners, but trademark owners in financial and retail businesses must be particularly diligent in their policing efforts. Consumers rely heavily on these businesses and institutions to protect their confidential information, especially since the losses they could potentially suffer include significant financial losses.

The way in which society has come to use and appreciate the benefits of the Internet could be drastically changed or limited because of growing instances of fraud and the efforts to combat its effects. This threatens to destroy the progress and improvements society has enjoyed since the advent of the Internet and the endless opportunities it provides to enhance people's lives and ability to work efficiently and make important global connections.

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Sources
Trends in the Law of Information Security (CIPerati, Thomas J. Smedinghoff, 2005), available at http://www.abanet.org/buslaw/committees/CL320010pub/newsletter/0006/